Monthly Archives: November 2008

Krishnamurthy: The Statutory Mechanical License in India: Whose Version [of the Law] is Correct?

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Filed under Academia, Foreign, India, Mechanical royalties, Music

Nikhil Krishnamurthy, everyone’s favorite Indian practitioner/flamethrower, recently posted an article on the compulsory license in musical compositions. I wrote about one of Mr. Krishnamurthy’s other papers last week.

Apparently, Indian courts have split on whether an artist can cover a song under the Copyright Act’s compulsory license provision without first obtaining permission from the original author (provided that an authorized version of the song has been released for two-years). The relevant part of Section 52(1)(j) of the Indian Copyright Act states as follows:

The following acts shall not constitute an infringement of copyright, namely: (j) the making of sound recordings in respect of any. . . musical work, if . . .(ii) the person making the sound recordings has given notice of his intention to make the sound recordings, has provided copies of all covers or labels with which the sound recordings are to be sold, and has paid in the prescribed manner to the owner of rights in the work royalties in respect of all such sound recordings to be made by him, at the rate fixed by the Copyright Board in this behalf[;] Provided that. . . (iii) no such sound recording shall be made until the expiration of two calendar years after the end of the year in which the first sound recording of the work was made. . .

Mr. Krishnamurthy contends that permission of the original author isn’t required for a subsequent musician to record a cover, provided that an authorized version of the original was released two-years earlier. First, Mr. Krishnamurthy’s argues that Section 52(1)(j) would be redundant if permission were always required. Secondly, Mr. Krishnamurthy makes the historical argument that Indian copyright law has featured a compulsory license provision since the Copyright Act of 1957 incorporated the scheme of the English Gregory Report (report of the Copyright Committee of 1952).  Mr. Krishnamurthy’s states that, absent any evidence to the contrary, there should be a presumption that Parliament didn’t intend “drastic” changes to a policy the Indian Copyright Act has contained since its foundation.

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I find the idea that it would be financially advantageous for the Indian recording industry to limit  covers interesting, even if it’s only for a period of two years. There is no comparable holding-period under American copyright law. This seems like the type of limitation that the American recording industry could have pushed Congress to enact years ago if there was any impetus. This brings us to my favorite topic: how it may be beneficial for individual countries to have differing copyright structures, and inversely, how differing copyright structures may foster varying performance practices.

I can think of a number of reasons for why the Indian recording industry might want a two-year exclusivity period, when it wouldn’t be called for in the U.S.:

  • First, as suggested by Mr. Krishnamurthy in his article, the Indian music industry is centered around Bollywood musicals.  Given that film is central to marketing, it’s not unreasonable to think that songs in India are more important to a recording’s success than they are in the U.S.  I.e. in India, songs are the stars; in the U.S., performers have a comparatively larger effect than songs on album sales.
  • The absence of a performance right in sound recordings under U.S. copyright law provides a disincentive for American musicians to make cover recordings.  Unless an American musician records songs that they write, they are closed out of radio related royalties.  Indian copyright law grants performance rights to both composers and performers so that, even if an Indian performer records a song they didn’t write, they still receive some royalties for radio play.
  • Perhaps there are segments of the Indian market that give less credence to branding and are more accepting of sound-alike albums than many segments of the American market.
  • It may be more costly to track sales of cover recordings for royalty collection in India than it is in the United States.  It may make more sense for Indian labels to limit all covers rather than spending money trying to track cover sales.

These are just my best guesses.  If any of this blog’s Indian readers would like to evaluate or add to the potential rationales, I would love to hear any comments.

Nikhil Krishnamurthy, The Statutory Mechanical License in India: Whose Version [Of the Law] is Correct?, Manupatra Intellectual Property Reports, MIPR, Vol. 1, p. A-115 (March 01, 2007).

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Baltimore Ravens’ use of logo in memorabilia held to be fair use in long-running dispute

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Filed under Fair Use

Frederick E Bouchat v. Baltimore Ravens Limited Partnership, et al., MJG-08-397 (Nov. 21, 2008).

In the latest chapter of a decade-long dispute, the District Court of Maryland held on Friday that the Baltimore Ravens, the NFL, and NFL Films are not liable for damages stemming from their use of an infringing logo in public displays, films and memorabilia. The Court found that the defendants’ use of the logo was shielded by fair use.

The Plaintiff, Frederick E. Bouchat, is an amateur artist who drew pictures inspired by comic books. When Bouchat learned in 1995 that the Colts were moving to Baltimore he drew a series of logos for the incoming team. In April 1996, Bouchat faxed the Shield drawing (left) to the President of the Ravens along with a note stating: “If he would like this design if he does use it I would like a letter of recognition and if the team wants to I would like a adiograph[sic] helmet.” Through what the Court labels “a series of misunderstandings,” Bouchat’s drawing was sent to the Stadium Authority’s law office; then to the Ravens’ temporary headquarters; next to the NFL in New York; and finally to the commercial artists working on the project. According to the judgment, the Ravens and the NFL used the logo (right) under the belief that it was an original work.

Bouchat consulted counsel and registered his work shortly after he became aware of the infringing work. In May of 1997, Bouchat filed a copyright infringement action, Bouchat v. Baltimore Ravens, et al., MJG-97-1470. A jury found infringement, which was affirmed on appeal by the Fourth Circuit. In the damages phase of the trial Bouchat’s counsel sought actual damages and additional profits of the infringer. A jury found that there was no profit attributable to the infringement of Bouchat’s copyrighted work, also affirmed on appeal.

Bouchat was unable to seek statutory damages because the infringement of his work occurred prior to the registration of his copyright. See e.g. Mason v. Montgomery Data, Inc., 967 F.2d 135 (5th Cir. 1992) (“A plaintiff may not recover an award of statutory damages and attorney’s fees for infringements that commenced after registration if the same defendant commencd an infringement of the same work prior to registration.”)

Bouchat then filed actions against several hundred NFL licensees who sold merchandise bearing the infringing symbol, none of which resulted in damage awards. In this suit, Bouchat sought an injunction against the NFL and Baltimore Ravens from depicting the Flying B Logo in highlight films, action film clips, public displays of memorabilia, and photos. The Court held that the Defendant’s infringement was shielded from liability under fair use:

  • Purpose and Character: The court found that the defendants’ use was historical and not, “except in the most tangential sense,” commercial.  Supporting this finding, the Court included a funny ten-page history of logos used by the colts at the beginning of the opinion.
  • Nature of the Work: Siding with the plaintiff, the Court found that the nature of the work was not the type that would be copied without express permission.
  • Amount and Substantially: The Court found that although the logo was included in its entirety it wasn’t a major component of the entire work used, “[w]hether in a display of inaugural season tickets, a photo of a former player or . . . a Raven’s highlight film.”
  • Potential Effect on the Market: The Court found that there is nothing to indicate that there is any present or foreseeable market for the Bouchat’s work.

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Maryland IP Law has a nice discussion on a previous iteration of this dispute.

Filings:

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SDNY Filings: Curtis James Jackson, III, “50 Cent” v. Taco Bell Corp

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Filed under Music, News

A surprisingly fun suit is brewing in the SDNY between rapper Curtis Jackson and Taco Bell Corp. According to the complaint, Taco Bell released a letter (below) on the company’s website. Curtis James Jackson, III, better known as a musician under his trade name “50 Cent,” brough suit seeking over one million dollars in damages for trademark infringement, false designation of sponsorship, and dilution, and an assortment of New York state law claims. Summarized in the complaint:

. . . Taco Bell knew that it would likely have had to pay Jackson a multi-million dollar fee to get his endorsement, even if he had agreed to do it (which is in doubt). Rather than face rejection or pay fair value, Taco Bell chose to steal his endorsement and to enjoy all the publicity of being associated with a mega-star while bearing none of the costs. Jackson brings this action to force Taco Bell to pay for diluting the value of his good name and to recover the fair value of his stolen endorsement.

The Answer, which denies most of the factual allegations, uses the following introduction:

Plaintiff Jackson is a self-described former drug dealer and hustler. He is now a rap music performer who uses the term “50 Cent” to identify himself His work falls in the sub-genre of hip hop music known as “gangsta rap,” a style associated with urban street gangs and characterized by violent, tough-talking braggadocio.

I wonder if the tone of the Answer is intended to provoke publicity.

Filings:

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Krishnamurthy: Sound Advice [Or What You Always Wanted to Know About Phonographic Performance But Were Afraid to Ask]

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Filed under Academia, Foreign, Legislation, Music

SSRN has a plethora of new academic papers that look yummy.  l will try to get to a couple of them over the next few weeks.  In particular a white paper by Nikhil Krishnamurthy on performance rights piqued my interest.  Mr. Krishnamurthy is a Senior Partner at the Bangalore firm of Krishnamurthy & Co.

Performance rights is an issue that is personally close to my heart.  Mr. Krishnamurhy’s paper reads like a legal article with an investigatory journalism slant.  His main points:

  • American recordings are not granted performance rights under Indian copyright law because the United States doesn’t grant these rights domestically.  Section 40 Clause 42 of the Indian Copyright Bill of 1955 states that India grants rights to works published outside of the country on a “reciprocal” basis.
  • Nonetheless, the Phonographic Performance Ltd. (PPL), an Indian licensor for public performance rights, is still collecting royalties from radio stations, hotels and bars.  Says Mr. Krishnamurthy: “This state of affairs is certainly due to the ignorance of the law on the part of the  music user and must be remedied at the earliest.”
  • Mr. Krishnamurthy then argues that the high licensing rates being applied by the PPL are “in gross abuse of its monopoly position” and “have no relation to worldwide practices of corresponding societies.”  Furthermore, PPL is collecting licensing fees for music videos even though the organization is statutorily prohibited from “carrying on business in other works” such as working with videograms (music videos).
  • The paper takes a fun shot at the Clinton Administration for, in the author’s view, not adequately protecting the rights of Indian record labels under American copyright law, while simultaneously putting India on a watch list for not providing effective copyright enforcement for American works.
  • Lastly, the author suggests that Indian businesses should adopt a policy of exclusively performing American works as a bargaining chip to deprive the PPL of royalties and force more equitable licensing terms for Indian works.

Links:

Nikhil Krishnamurthy, Sound Advice [Or What You Always Wanted to Know About Phonographic Performance But Were Afraid to Ask] (June 1, 2007). Manupatra Intellectual Property Reports (MIPR), Vol. 2, p. A12, 2007.

International Copyright Representation

Daily News Roundup: Nov 21, 2008

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Filed under News
  • Apple included a copy protection scheme called High-bandwidth Digital Content Protection (HDCP) on the latest models of their MacBooks, released mid-October.  HDCP  prevents customers from playing content on external displays.
  • Bowling Green High School in Kentucky tries to teach “Digital Citizenship.” Al Gore deports students who fall asleep in class.
  • The EU launched an online library oh so creatively named Europeana (www.europeana.eu).  Huzzah!  The library includes such works as Beethoven’s 9th, Dante’s Divine Comedy and other stuff from people who are dead; a total of over two million works from one thousand libraries in twenty-seven EU States (we don’t call them countries anymore).
  • Utah District Court Judge orders the destruction of elkHe also awarded $50,000 in damages and $30,000 in attorneys’ fees for trademark and copyright infringement.
  • Judy McGrath, Chief Executive of MTV-Networks, comments that a “big part of [MTV's] future is working with advertisers and distributors and maximising intersting ways to involve them.”   The reporter at the Economist hints that Ms. McGrath may be referring to “being more flexible when it comes to control over content on the web.”

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